EXHIBIT 1012
`
`
`ORIGINAL TRANSCRIPT OF BOARD TELEPHONE
`
`CONFERENCE HEARING (JANUARY 12, 2016)
`
`
`
`TRW Automotive U.S. LLC: EXHIBIT 1012
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 8,599,001
`IPR2015-00436
`
`

`
` 1
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 ___________
` 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 4 ___________
` 5 TRW AUTOMOTIVE U.S. LLC,
` Petitioner,
` 6 v.
` 7 MAGNA ELECTRONICS, INC.
` Patent Owner.
` 8 __________
` 9 Case IPR2015-00436, IPR2015-00437, IPR2015-00438,
` and IPR2015-00439
` 10 Patent 8,599,001 B2 1
` __________
` 11
` BEFORE JUSTIN T. ARBES, BART A. GERSTENBLITH, and
` 12 FRANCES L. IPPOLITO
` ______________________________________________________
` 13
` 14 The telephone conference was heard before
` the Administrative Patent Judges, Justin T. Arbes,
` 15 Bart A. Gerstenblith, and Frances L. Ippolito, on
` January 12, 2016, at 2:31 p.m., before Jennifer
` 16 Windham, Certified Shorthand Reporter and Notary
` Public within Colorado.
` 17
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`Hunter+Geist, Inc.
`
`303.832.5966
`800.525.8490
`
`1900 Grant Street, Suite 1025
`Denver, CO 80203
`
`www.huntergeist.com
`scheduling@huntergeist.com
`
`Your Partner in Making the Record
`
`Court Reporting, Legal Videography, and Videoconferencing
`
`1012-001
`
`

`
`TRW Automotive U.S. LLC v. Magna Electronics, Inc. TELEPHONE CONFERENCE HEARING
`
`1/12/2016
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` ___________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ___________
` TRW AUTOMOTIVE U.S. LLC,
` Petitioner,
` v.
` MAGNA ELECTRONICS, INC.
` Patent Owner.
` __________
` Case IPR2015-00436, IPR2015-00437, IPR2015-00438,
` and IPR2015-00439
` Patent 8,599,001 B2 1
` __________
`
`BEFORE JUSTIN T. ARBES, BART A. GERSTENBLITH, and
`FRANCES L. IPPOLITO
`______________________________________________________
`
` The telephone conference was heard before
`the Administrative Patent Judges, Justin T. Arbes,
`Bart A. Gerstenblith, and Frances L. Ippolito, on
`January 12, 2016, at 2:31 p.m., before Jennifer
`Windham, Certified Shorthand Reporter and Notary
`Public within Colorado.
`
`2
`
` A P P E A R A N C E S
`For the Petitioner:
` JON R. TREMBATH, ESQ.
` Lathrop & Gage, LLP
` 950 17th Street
` Suite 2400
` Denver, Colorado 80202
` DOUGLAS W. LINK, ESQ.
` Lathrop & Gage, LLP
` 4845 Pearl East Circle
` Suite 201
` Boulder, Colorado 80301
`
`For Patent Owner:
`
` DANIEL E. YONAN, ESQ.
` MARK CONSILVIO, ESQ.
` Sterne, Kessler, Goldstein & Fox, PLLC
` 1100 New York Avenue, Northwest
` Suite 600
` Washington, DC 20005
`
`3
` WHEREUPON, the following proceedings were
`Trademark Office.
` * * * * *
` JUDGE ARBES: This is Judge Arbes, and
`I'm here with Judges Gerstenblith and Ippolito. This
`is a conference call in IPR2015-436. Do we have
`counsel for petitioner on the line?
` MR. TREMBATH: Yes. Jon Trembath and
`Doug Link.
` JUDGE ARBES: And counsel for patent
`owner?
` MR. YONAN: Yes, Your Honor. Danny Yonan
`with Mark Consilvio.
` JUDGE ARBES: And I understand we have a
`court reporter on the line.
` THE REPORTER: Yes. This is Jennifer
`Windham. I'm the court reporter.
` JUDGE ARBES: Thank you. Just let us
`know if you can't hear anything.
` The conference call today, I believe, was
`requested by petitioner to discuss a discovery issue.
`So counsel for petitioner, would you like to go first
`and explain what you're requesting?
` MR. TREMBATH: Generally speaking, what
`
`4
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`we're looking for is information that rebuts stuff
`that Magna has said. For example, Magna has
`represented -- I apologize for my voice -- the VVL
`imputer may not work looking forward.
` The VVL imputer was a product made by a
`company, VLSI Vision, and a predecessor to Magna
`called Donnelly, used that, and it's referenced in the
`patent, in fact. Magna represents, well, it may not
`work looking forward. And they also represent that
`one of the prior art references that we'd like to
`combine with Vellacott to say the algorithms are
`likely outside of Vellacott's capabilities.
` Their expert has suggested that
`documentation about the VVL imputer and the VLSI
`product would have been conveyed to Donnelly, Magna's
`predecessor. So it seems like the documents ought to
`be there, based on what their expert has said.
` Magna's response is, well, Magna
`Electronics isn't Donnelly and never was -- never had
`Donnelly's records like this. But in the patent
`owner's response, page 88, Magna says Vellacott is not
`a prior art disclosure because it's a disclosure of
`the patent owner. So that line doesn't run straight.
` It seems like -- well, Donnelly was
`purchased by some Magna entity and was rolled into
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`HUNTER + GEIST, INC.
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`1 (Pages 1 to 4)
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`303-832-5966/800-525-8490
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`1012-002
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`

`
`TRW Automotive U.S. LLC v. Magna Electronics, Inc. TELEPHONE CONFERENCE HEARING
`
`1/12/2016
`
`5
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`some Magna entity, whether or not it is the specific
`Magna Electronics, I have no idea of knowing. I know
`what Magna had said, and that it is a disclosure of --
`Vellacott was a disclosure of the patent owner, which
`would suggest that maybe Magna Electronics is the
`successor.
` JUDGE ARBES: Counsel, can I ask a couple
`of questions. One, you're pointing to two statements
`that the patent owner has made. You believe there may
`be inconsistent information out there. And you said
`the first was that the VVL imputer may not work. Can
`you point me to where that is in the patent owner's
`response where they make that argument.
` MR. TREMBATH: It's a fairly consistent
`argument. I'll find you some point cites to that. I
`assume you'll want them for the algorithms -- it may
`not work outside of Vellacott's capabilities. Some of
`it may have come from their expert's deposition as
`well. Doug is looking on his computer right now to
`find you some cites.
` JUDGE ARBES: And while you're looking
`for that, I take it your position is that the patent
`owner must have inconsistent information -- or
`information that is inconsistent with positions
`they've taken -- these two positions they've taken in
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`6
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`their response?
` MR. TREMBATH: Correct.
` JUDGE ARBES: Okay. How do we know that?
` MR. TREMBATH: Well, the VVL imputer may
`not work looking forward. In the specification
`itself, it suggests that what's disclosed in the
`specification works forward and rearward. There's no
`distinction.
` And the underlying device is the VLSI
`camera. That's what they say is something -- that's
`what they disclosed. This is this patent owner's
`response. Patent owner's response, page 28, it
`states, "A person of ordinary skill in the art would
`have had no way to know if an attempt to implement
`Kenue's algorithms on the VVL imputer would likely
`result in success."
` JUDGE ARBES: So I understand that the
`parties obviously have a dispute as to whether the VVL
`imputer would work, whether a person of ordinary skill
`in the art would have known a way to implement any of
`these algorithms on the VVL imputer. That seems to be
`a dispute of the parties.
` But how do we know that the patent owner
`has information inconsistent with the positions that
`they've taken. They've taken this position here, but
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`you say they have inconsistent information. How do we
`know that?
` MR. TREMBATH: I'm going to let Doug
`answer that, Doug Link.
` MR. LINK: Well, we have -- in Vellacott
`we have a statement saying that Donnelly Corporation
`utilized the imputer to develop a commercial product
`in a rearward facing embodiment. That's clearly shown
`in the sealed trials portion. I believe it's on page
`114 of the actual document of Vellacott.
` We also have specific evidence showing
`that Kenneth Schofield and Mark Larson, the two
`inventors of the '001 patent, were heavily involved in
`developing a product that Donnelly Corporation made
`that was the rearward facing anti-glare embodiment.
`That's actually the first half, or more than the first
`half of the '001 patent is a rearward facing
`embodiment.
` Then all of a sudden, we have no
`documentation whatsoever that was ever supplied to the
`USPTO during prosecution of the '001 patent of the
`imputer, either its tech manuals, nothing out there.
` We've given to the patent owner some
`documents that are external papers that site to
`imputer user manuals and reference guides describing
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`8
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`the algorithms, but we can't find those online
`anywhere.
` The thing about that is, when we took a
`deposition of Magna's expert, he made statements
`saying that during development of a product, you would
`have to rely upon technical datasheets or user manuals
`or some other description of the commercial product
`that you were implementing into a vision system.
` But we know at some point Donnelly was in
`possession of technical datasheets documents related
`to the imputer that's based on both Vellacott and
`Magna's own experts.
` JUDGE ARBES: But, again, Counsel, as I
`understand it, you're requesting us to compel the
`patent owner to provide the inconsistent information
`under 4251?
` MR. LINK: We're not just requesting
`documents. We requested depositions of the inventors,
`and they refused that as well.
` JUDGE ARBES: Okay. Let's take those one
`at a time. Well, let me ask this: What exactly are
`you requesting for discovery?
` MR. LINK: We requested three subsets of
`documents and details. One, details and documents
`surrounding that VLSI Vision Limited imputer and
`
`scheduling@huntergeist.com
`
`HUNTER + GEIST, INC.
`
`2 (Pages 5 to 8)
`
`303-832-5966/800-525-8490
`
`1012-003
`
`

`
`TRW Automotive U.S. LLC v. Magna Electronics, Inc. TELEPHONE CONFERENCE HEARING
`
`1/12/2016
`
`11
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`9
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`related imager as described in Vellacott. And that,
`again, is based on Schofield's -- the inventors,
`Schofield and Larson's, connection to the rearward
`facing embodiment, which is also disclosed in the
`'001.
` JUDGE ARBES: Documents about this
`device. Again, I understood from your e-mail that you
`are saying that the patent owner has inconsistent
`information. Are you not taking that position
`anymore?
` MR. LINK: We are taking.
` JUDGE ARBES: So you're asking for
`documents that are inconsistent with positions they've
`made in their patent owner's response, not just all
`documents related to this imputer, right?
` MR. LINK: Right.
` JUDGE ARBES: Okay. What are the other
`two?
` MR. LINK: Another such example is in the
`patent owner response they state that the VVL's
`imputer library of function could not be pattern
`recognition.
` MR. ARBES: What page of the response is
`that on?
` MR. LINK: Page 48.
`
`10
`
` JUDGE ARBES: Can you point me to the
`sentence that you're referring to?
` MR. LINK: The bridge sentence between 48
`and 49, "Vellacott teaches that the VVL imputer had
`pre-packaged software related to machine vision
`functions, including morphological (shape) filters,
`transforms, correlators, convolvers, image
`segmentation, frequency filtering, rotation,
`reflection and logical operators."
` People of ordinary skill in the art
`clearly understand that correlators include some sort
`of pattern recognition. So them making this statement
`that a correlator, in terms of the VLSI Vision imputer
`is not a pattern recognition, they either, one, must
`have knowledge of what is in the imputer manual, and
`in good faith they have to know that.
` JUDGE ARBES: I'm sorry, Counsel, to
`interrupt you, but it appears on pages 48 and 49 of
`the response that patent owner is making an argument
`that Vellacott does not teach the particular
`limitation of claim 28.
` They're saying that Vellacott teaches
`that the VVL imputer has prepackaged software that did
`certain things. None of what is disclosed in
`Vellacott is pattern recognition algorithms. That may
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`or may not be true, but how does that show that they
`have information inconsistent? They're taking a
`position on what Vellacott discloses. It either does
`or doesn't. How do we know that they have information
`inconsistent with the position they're taking?
` MR. LINK: Because it is known that a
`correlator is a pattern recognition.
` JUDGE ARBES: Well, that's not the
`question. The question is what Vellacott discloses,
`right?
` MR. LINK: Right, right.
` JUDGE ARBES: So in your second request,
`what exactly -- what information are you requesting?
` MR. LINK: The second request was related
`to the deposition of the inventors, Schofield and
`Larson, and the information gleaned to them during the
`development of the invention claimed in the '001
`patent, and that was based on what we laid out
`previously.
` JUDGE ARBES: And a deposition of the
`inventors, I take it that's a request for additional
`discovery?
` MR. LINK: Yeah. We characterized our
`letter to them as a request for routine discovery and
`alternative additional discovery.
`
`12
` JUDGE ARBES: Okay. How would that fall
`under routine discovery?
` MR. LINK: They're making statements that
`they don't know what the imputer did or does. And we
`have, via the testimony of their expert, during the
`deposition that was taken, their expert testified that
`they must have garnished information and documents
`related to the imputer in order to develop a product
`surrounding that imputer.
` Vellacott merely says that Donnelly
`Corporation developed a product using the imputer, and
`that product relates directly to what is disclosed in
`the first half of the '001 patent.
` JUDGE ARBES: And are you referring to
`the two named inventors or the patent owner of the
`entity?
` MR. LINK: The two named inventors. We
`requested a deposition of them.
` JUDGE ARBES: I'd like to hear from
`patent owner, but let's cover all of the requests
`first. What is the third request that you mentioned?
` MR. LINK: The third request was related
`to publication and printed -- and public availability
`of Vellacott itself. As discussed on page 88, the
`patent owner admits that Vellacott was a disclosure by
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`scheduling@huntergeist.com
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`HUNTER + GEIST, INC.
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`3 (Pages 9 to 12)
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`303-832-5966/800-525-8490
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`1012-004
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`

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`TRW Automotive U.S. LLC v. Magna Electronics, Inc. TELEPHONE CONFERENCE HEARING
`
`1/12/2016
`
`15
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`13
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`the patent owner. So in turn they must be the best
`source of availability for knowledge of when that was
`publicly available.
` In addition, we supplied the patent owner
`with documentation from the University of Essex, which
`has a date stamp received in May, I believe it's
`exactly May 24 of 1994, which further verifies that
`those documents were publically available.
` We requested that Magna admit that, one,
`because they were the -- it was a disclosure by
`themselves -- I'm sorry, it was a disclosure by the
`patent owner, as admitted by the patent owner. And,
`two, we have further evidence showing that it was
`publicly available, that they admit that it was
`publicly available.
` JUDGE ARBES: And what are you requesting
`in discovery, either as routine discovery or
`additional discovery?
` MR. LINK: That would be, one, routine
`discovery, because there's evidence contrary to their
`statement that it was not publicly available.
` JUDGE ARBES: Okay. So what exactly is
`the request? For instance, what type of documents are
`you requesting? If we were to compel them to produce
`information as routine discovery, what would we be
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`14
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`compelling them to produce?
` MR. LINK: We requested them to admit
`that Vellacott was a printed publication, at least as
`early as May 24, 1994, which is --
` JUDGE ARBES: I'm sorry. This is a
`request that they admit something?
` MR. LINK: Yeah. Request for admission.
`And, again, that's based on the fact that they admit
`their own disclosure, as well as additional evidence
`showing that it was publicly available at the
`University of Essex as of May 24, 1994.
` JUDGE ARBES: Well, it seems either the
`document was publicly available or it wasn't. What
`exactly would they be admitting?
` MR. LINK: Well, they submitted in their
`patent owner response that there's no way they can
`tell if it was a publicly accessible document, when it
`was their own document.
` JUDGE ARBES: Okay. Can we hear from
`counsel for patent owner. One, the first question I
`would have, have you all met and conferred regarding
`these requests? Have you received the requests and
`talked to petitioner about them?
` MR. YONAN: Yes, Your Honor. This is
`Danny Yonan. We received a nine-page letter from them
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`the day before Christmas Eve identifying -- and it's a
`much broader scope of what they're asking for, right.
`They asked for any document related to the VVL imputer
`as used by Donnelly, any document related to any chip
`used by Donnelly, any document related to any
`commercially available image sensor, they asked for
`interrogatories, they asked for two depositions of our
`inventors.
` The scope of what they're asking for,
`Your Honor, with basically a week left to go on their
`reply is not routine discovery, and it doesn't fall
`within the exceptions or the Garmin Factors that are
`set forth in governing whether additional discovery is
`provided for. And so we told them that this stuff is
`old, we don't know whether it exists. And it's not
`our burden; it's your burden. You're the petitioner.
` When you filed your petition in December
`of 2014, it was your obligation to come to the PTAB
`with the right references and the right materials and
`to have done the proper diligence. And with a week to
`go before your reply is due, it's not our obligation
`to make your case.
` And there's been no inconsistency.
`Everything, as you pointed out, Your Honor, in the
`questions that you were raising to petitioner, these
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`are substantive questions, these are issues that are
`being contested by the parties.
` Our expert -- the main issue our expert
`had with the questions that were being asked at the
`deposition -- and I was there -- the issues were that
`the reference that they put before him simply doesn't
`have the requisite teachings, doesn't have any of the
`requisite detail that would allow a person of skill
`and art to come to a conclusion of what's actually
`being disclosed, and that's what was articulated
`during the deposition.
` So a long-winded way, Your Honor, of
`coming back to your original question is saying, yes,
`we met and conferred, and we didn't come to an
`agreement.
` JUDGE ARBES: Can you respond to the
`petitioner's assertions that some of the arguments
`made by patent owner in this response that, for
`instance, that the VVL imputer would not work or that
`a specific combination would not work, that the patent
`owner is in possession of information that may be
`inconsistent with that? Can you respond to that?
` MR. YONAN: Yeah. So Your Honor, as a
`basic threshold, right, our expert was put up on
`deposition and shown the Vellacott reference, right,
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`scheduling@huntergeist.com
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`HUNTER + GEIST, INC.
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`4 (Pages 13 to 16)
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`303-832-5966/800-525-8490
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`1012-005
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`

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`TRW Automotive U.S. LLC v. Magna Electronics, Inc. TELEPHONE CONFERENCE HEARING
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`1/12/2016
`
`19
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`17
`this is a prior art reference. And when he was asked
`questions about that reference, he was opining as to
`what a person of the skill in the art would understand
`was leading that reference.
` What petitioner was just talking to you
`about was conflating sort of the patent with the
`reference. So they're two completely different
`situations. But no way has there been inconsistency.
`Our expert has been opining as to what a person in the
`skill of the art would know based upon a reading of
`Vellacott, and he gave his opinion on that. That's a
`substantive question, a substantive issue. That
`evidence has been taken.
` MR. LINK: May I say a couple of things?
` JUDGE ARBES: Why don't we finish the
`other two issues real quick and then we can hear from
`petitioner one last time. Regarding the second issue,
`the inventors, the first question I have for patent
`owner, are they employees of patent owner?
` MR. YONAN: That's an uncertain question,
`Your Honor. And we tried to look into that. It
`appears that one may not be. So we don't know the
`answer for today's call to that question. An
`important point to note, too, Your Honor, is that this
`patent is currently in a district court litigation
`
`18
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`that goes to trial in the beginning of February.
` There's been over two years of fact
`discovery that's been had, and petitioner, TRW, has
`already deposed these people. So this is not an
`isolated case of whether or not they could find
`discovery, whether or not they could depose these
`people, they had their chance, and now they're waiting
`until a week before the reply is due to get another
`bite at that apple. That's the way that we see this.
` JUDGE ARBES: And would you like to
`respond to the third assertion by petitioner regarding
`patent owner's view of whether Vellacott is a printed
`publication?
` MR. YONAN: Yes, Your Honor, we never
`made that assertion.
` JUDGE ARBES: Okay. So patent owner has
`not asserted that Vellacott is not a prior art printed
`publication?
` MR. LINK: That's right.
` MR. YONAN: That's correct, Your Honor.
` JUDGE ARBES: Well, that seems to resolve
`the third issue, at least, then. Anything else from
`patent owner before we hear from petitioner?
` MR. YONAN: Your Honor, I just want to
`highlight a couple of overtones here. And these are
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`questions that you had actually raised in the
`beginning to petitioner. This is not routine
`discovery, right. The declarants that we've had in
`this case, the one, our expert, he's been deposed.
` If it's additional discovery, that's
`governed by the Garmin Factors, and I'm not going to
`go through all five of those factors, but if you start
`to look at the letter that they sent us the day before
`Christmas Eve, their letter is replete with sound
`bites that come out saying that, you know, the
`evidence suggests, TRW believes, Magna is likely to
`have, Magna may still have. It's pure speculation,
`and it's speculation that's uncalled for. This stuff
`is prohibited by Garmin Factor number one. And that's
`only the tip of the iceberg.
` As you get more into it, the requests are
`broad, completely unbound in scope, and it leads us to
`believe, sort of, that that second Garmin Factor is
`triggered. That what they're trying to do here is
`alter the board's trial procedures, simply so they can
`get more discovery that they were supposed to have
`gotten either in the district court case through their
`own diligence, or at some point before they filed
`their IPR in this matter. Or at some point after they
`reviewed our POR or our POPR, not one week before
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`their reply is now.
` And so we see this as nothing more than a
`gaming exercise, and we request the board to deny any
`attempt by petitioner to request additional discovery.
` JUDGE ARBES: Okay. Counsel for
`petitioner, you can have the last word before the
`panel confers.
` MR. LINK: First and foremost, patent
`owner makes reference that this was brought up only a
`week before the reply is due, petitioner's reply is
`due, but we sent this letter on December 23, which is
`three days less than a month prior to our reply being
`due.
` Patent owner responded back on Christmas
`Eve saying that he could not -- that patent owner was
`unavailable until January 8 to respond to our
`discovery request.
` JUDGE ARBES: I'm sorry, Counsel, can I
`ask you about the timing, though, because it looks
`like patent owner's response was filed on October 13.
`If you sent the letter raising this issue for the
`first time on December 23, that's well after the
`patent owner filed its response in October.
` MR. LINK: Well, a portion of what keyed
`off this discovery request was the deposition of
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`scheduling@huntergeist.com
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`HUNTER + GEIST, INC.
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`5 (Pages 17 to 20)
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`303-832-5966/800-525-8490
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`

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`TRW Automotive U.S. LLC v. Magna Electronics, Inc. TELEPHONE CONFERENCE HEARING
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`1/12/2016
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`Magna's expert, Dr. Etienne Cummings.
` JUDGE ARBES: And when did that take
`place?
` MR. LINK: That took place, I believe,
`December 12, I think.
` MR. YONAN: Your Honor, actually December
`11.
` MR. LINK: But we turned around the
`discovery request in 12 days.
` MR. YONAN: And, Your Honor, if I may,
`one comment to that?
` JUDGE ARBES: I'm sorry. This is counsel
`for?
` MR. YONAN: This is counsel for Magna,
`patent owner.
` JUDGE ARBES: Okay.
` MR. YONAN: Your Honor, if this was
`something that was genuinely vital to their case and
`meeting their burden, they would have requested this
`discovery immediately after that deposition, let alone
`at the time the POR was filed.
` I mean, the fact that they wait weeks and
`weeks and give us a letter, a nine-page letter asking
`for everything under the sun the day before Christmas
`Eve, I think is illustrative of what's really going on
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`here.
` JUDGE ARBES: Okay. Well, I think we
`understand the timing of everything. Counsel for
`petitioner, anything else substantively that you'd
`like to say before the panel confers?
` MR. LINK: Patent owner made reference
`that they did not allege that Vellacott was not a
`publicly accessible -- over on page 88, they say,
`quote, "Finally, even if Vellacott was published in
`1994 or later, if it becomes a 102 (a) reference, the
`teachings that Vellacott and TRW rely upon to Donnelly
`system, are not prior art to the '001 patent, since
`they would be a disclosure by the patent owner, Magna,
`who purchased Donnelly."
` JUDGE ARBES: I think we established
`during the call today, at least, that patent owner is
`not challenging whether Vellacott is a prior art
`printed publication, so I think that resolves the
`third issue, right?
` MR. LINK: Correct.
` JUDGE ARBES: So we're just dealing with
`the first two issues, then. Is there anything else
`that you'd like to add before the panel confers?
` MR. YONAN: Your Honor, just a subtle
`point. We were raising that argument in the
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`alternative. It's not that we were contesting it. I
`think page 88 is very clear on its own.
` JUDGE ARBES: Well, why don't we hear
`from petitioner one last time, and then the panel will
`confer.
` MR. LINK: I think this could be
`potentially helpful to read on the issue, that way we
`can put forward the request of discovery, as it's
`somewhat difficult to encapsulate all of the paperwork
`and the e-mails that went back and forth.
` JUDGE ARBES: Well, the panel will confer
`briefly, and we'll go on mute and be back in just a
`minute.
` MR. YONAN: Thank you, Your Honor.
` MR. TREMBATH: Thanks.
` (Panel conferring off the record.)
` JUDGE ARBES: This is Judge Arbes. What
`we'd like the petitioner to do is to please e-mail the
`board the list of specific materials that you would be
`requesting either via a routine discovery or
`additional discovery.
` This is just the list of what is being
`requested. We're not looking for the letter with the
`broad request that was initially sent to the patent
`owner. It's purely the list of what you are
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`requesting -- or what you would be requesting in a
`motion. Keeping in mind that the board does not
`typically grant broad requests of the nature of all
`documents, for instance, relating to something like
`the imputer.
` So counsel for petitioner, if you can
`provide that list to the board by tomorrow, by e-mail.
`You can e-mail that to trials@uspto.gov, and we would
`like to see exactly what is being requested.
` Also, if the parties can please file a
`transcript of the call today as soon as possible, we
`would appreciate seeing that as well. After that, we
`will rule on whether or not any motion is authorized.
` MR. TREMBATH: Thank you, Your Honor.
`Would it be helpful to have a couple of examples, the
`ones that petitioner thinks are most relevant where
`the position was taken it is likely inconsistent or
`not?
` JUDGE ARBES: No. We're not looking for
`briefings at this point. What we're looking for is
`the list of exactly what would be requested in a
`motion. So we're not looking for the reasoning behind
`that. We've heard from both parties today. All we're
`looking for is the list of what would be requested in
`the motion.
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`scheduling@huntergeist.com
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`HUNTER + GEIST, INC.
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`6 (Pages 21 to 24)
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`303-832-5966/800-525-8490
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`1012-007
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`

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`TRW Automotive U.S. LLC v. Magna Electronics, Inc. TELEPHONE CONFERENCE HEARING
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`1/12/2016
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` MR. TREMBATH: Thank you very much.
` JUDGE ARBES: So we will look for that
`e-mail, and then we will issue an order soon after
`that. Anything else from the parties today?
` MR. YONAN: Nothing from patent owner,
`Magna. Thank you for your time, Your Honor.
` MR. LINK: Nothing from petitioner.
`Thank you.
` JUDGE ARBES: Thank you all. We're
`adjourned.
` WHEREUPON, the within proceedings were
`adjourned at the approximate hour of 3:06 p.m. on the
`12th day of January, 2016.
` * * * * *
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` REPORTER'S CERTIFICATE
`STATE OF C